The Complainant is AB Electrolux of Stockholm, Sweden, represented by BrandIT Legal AB, Sweden.
The Respondent is roayh net of Cairo, Egypt. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2015. On November 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 9, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 24, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2015.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 22, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a Swedish company founded over 100 years ago. It is engaged in the manufacture and sale of household products under inter alia the brand name “Zanussi”.
The Complainant, through its wholly owned subsidiary, Electrolux Italia S.p.A, is the proprietor of a large number of trade mark registrations for the trade mark ZANUSSI including by way of example International Trade Mark Registrations Nos. 1201466 registered on March 6, 2014 and 404462 registered on November 9, 1973, both of which cover Egypt, the Respondent’s country of residence.
The Domain Name was registered on August 11, 2015 and is connected to a website heavily branded with the mark ZANUSSI and offering “Zanussi Maintenance Services”.
On August 24, 2015 the Complainant wrote to the Respondent drawing the Respondent’s attention to its trade mark rights in respect of the trade mark ZANUSSI and seeking inter alia transfer of the Domain Name. The Respondent did not respond. Nor did it respond to the “chaser” sent on September 21, 2015. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s ZANUSSI trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s ZANUSSI trade mark preceded by the descriptive term “maintenance” and followed by the generic Top-Level Domain (“gTLD”) “.xyz”. The Complainant’s trade mark is prominent and readily recognizable in the Domain Name and neither of the additional elements serves in any way to diminish the distinctiveness of the trade mark.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trade mark. C. Rights or Legitimate Interests
The Complainant accepts that the Respondent is offering maintenance services in respect of the Complainant’s ZANUSSI appliances and makes no objection in respect of those services. However, the Complainant asserts that the provision of such services gives no right to the provider of those services to use the Complainant’s trade mark as part of the Domain Name. The Complainant has given the Respondent no permission to do so.
The Complainant prays in aid the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 pointing out that the Respondent fails the test set out in that decision. That test, which has been widely adopted by panelists and features in paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), addresses the issue as to the extent to which it is fair and reasonable for a third party to make use of another’s trade mark for (or as part of) a domain name. Paragraph 2.3 of the WIPO Overview 2.0 poses the question: “Can a reseller/distributor of trademarked goods or services have rights or legitimate interests in a domain name which contains such trademark?” At this stage, for present purposes it is only necessary to quote the first part of the so-called “consensus view”:
“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site accurately and prominently disclosing the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles.”
While the Oki Data case and the principles set out therein relate to resellers, there seems to the Panel no reason why by analogy those principles should not also apply to other third party service providers such as repairers and maintenance engineers (see VKP Holding A/S v. Eric Schoell, Window Medics Plus,WIPO Case No. D2015-0359).
In this case the Respondent appears to be offering maintenance services in respect of the Complainant’s goods and the Complainant accepts that the services offered are exclusively in respect of the Complainant’s goods. Where the Respondent fails is on the next requirement, namely that the site does not appear to accurately and prominently disclose the registrant’s relationship with the trade mark holder. The Respondent is an unauthorized reseller/service provider, yet the prominent use of the Complainant’s trade mark and livery combined with the offering of warranties in respect of the Complainant’s goods (and/or the Respondent’s services in respect of those goods) would, in the view of the Panel, be likely to indicate to most visitors some degree of official authorization. This is particularly so, given the absence of any form of disclaimer.
In short, the Respondent is using the Domain Name to connect to a website, which is likely to appear to be the site of the Complainant or a licensee of the Complainant. The matter was raised directly with the Respondent, but the Respondent failed to respond to the Complainant’s communications (see section 4 above).
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
On the same basis and in the absence of anything from the Respondent, whether it be responses to the Complainant’s pre-complaint letters or a Response in this proceeding, the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. By using the Domain Name, a domain name which is confusingly similar to the Complainant’s trade mark, to connect to a commercial website appearing to be an official, authorized website of or associated with the Complainant, the Respondent is “intentionally [attempting] to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.” 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: December 23, 2015
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